The Unified Patent Court (UPC) and the European patent with unitary effect (Unitary Patent) are revolutionizing the way patents are enforced in Europe. McDermott’s intellectual property team is deeply familiar with the patent landscape in Europe and the United States and is well-positioned to advise clients on developing an appropriate UPC plan of action and integrating it with their broader international strategy.
Our Legal Lens on the Unified Patent Court newsletter is designed to keep patent holders and legal departments well-informed of the latest updates and strategic insights on the new patent court.
What you’ll find in the Q1 2025 issue:
A Win for Patentees: UPC Issues First Reasoned Decisions, On the Subject, August 24, 2023
Early Adoption of the Unified Patent Court, On the Subject, July 21, 2023
Is the Top-Down FRAND Approach Officially Trending in Europe?, On the Subject, July 18, 2023
The Proposed EU SEP Regulations: A Quiet Move Toward a Top-Down World?, On the Subject, June 7, 2023
Countdown to the Unified Patent Court, On the Subject, May 22, 2023
The EU’s Draft Regulations on SEP Licensing: Additional Context from the Impact Assessment Report, On the Subject, April 17, 2023
First Look at the EU’s Draft Regulations on SEP Licensing, On the Subject, April 11, 2023
Are You Ready for the UPC? Act Now to Prepare for Its Opening on June 1, On the Subject, March 1, 2023
UPC Court of Appeal Rules on Suspending First Instance Enforcement, Managing Director Liability, November 21, 2024
EU Unified Patent Court Announces Intent to Launch, October 20, 2022
European UPC All Set for Set Up as Protocol Enters into Force, January 27, 2022
European UPC Almost Ready to Launch as Austrian Parliament Approves Ratification, December 9, 2021
Only One More Ratification Needed: European UPC Might Be Ready to Launch, October 7, 2021
Unified at Last? Germany’s Constitutional Court Removes UPC Hurdle, July 22, 2021
Leveraging Strength: How US Firms are Recruiting UPC Talent, Managing IP, November 27, 2024
SEPs, Medical Devices, E-cigarettes: Biggest UPC Battles Reveal Broad Court Remit, JUVE Patent, January 23, 2024
UPC Court of Appeal Hands Down First Decision at Breakneck Speed, IAM, October 26, 2023
Benefits of Unified Patent Court Compared to Local Litigation, Law360, June 6, 2023
Dawn of EU Unified Patent Court Set to Shake Up Litigation, Law360, May 5, 2023
Questions Abound on EU Plan for New Essential Patent Rules, Law360, May 1, 2023
McDermott Announces Formation of EU Patent Court, Law360, March 1, 2023
OCIPLA Virtual Event, Unified Patent Court: Initial Cases | November 16, 2023
Life Sciences Dealmaking Symposium 2023, IP Workshop: Asset Valuation and the Changing International Landscape | November 9, 2023
IAM Connect: UPC 2023, Using the New Court System to Maximum Effect | October 17, 2023
6th Annual International IP Summit, EU’s Unified Patent Court | October 12-13, 2023
The goal of the UPC is to reduce the cost and complexity associated with enforcing patents in the EU Member States and to generally improve the patent system in Europe. A UPC decision on infringement, injunction, damages and validity will be enforceable in all participating states – currently 18 countries including France and Germany. The UPC is the exclusive forum for actions relating to Unitary Patents. It is also competent for traditional European patents, unless the European patent has been proactively opted out, and for supplementary protection certificates granted for European patents.
The UPC provides many opportunities and potential benefits but, as a new court, it remains untested. We are here to advise clients and help them navigate any uncertainties. McDermott’s capabilities include developing a robust cross-border strategy. We offer in-depth knowledge of our clients’ industries, including the technical, economic and regulatory environments, and can advise on both offensive and defensive strategies.
Our team can advise on whether the UPC is the right avenue for enforcement according to a client’s priorities and goals. When the time comes, we can file infringement and revocation actions in the UPC. We can also advise on whether US or UK litigation should be included in the enforcement strategy.
Our team is well qualified to advise on patents that may be at risk of central attack and products that may face heightened infringement risk by the new venue. We can also help manage those risks and defend against competitor attacks. If an action is filed, we can undertake the defense in the litigation.
Our team can advise on whether opting out of the UPC is the right course of action. Below are just a few example reasons to consider.
| EXAMPLE REASONS TO OPT-OUT | EXAMPLE REASONS TO NOT OPT-OUT |
| The patent or patent family is too valuable to risk central revocation in the participating UPC Member States | The UPC could provide a speedy decision awarding an injunction and damages for several UPC Member States |
| A dispute with another party may lead to an action before the UPC, preventing you from opting out at a later time | A competitor may bring national proceedings and remove the possibility of opting back in at a later time |
| German bifurcation between infringement and invalidity proceedings increases the chances of obtaining an injunction more quickly | It may reduce costs and administrative time when compared to multiple national court actions because evidence gathered in one country can easily be used UPC-wide |
| The patent or patent family has already unsuccessfully opposed by a competitor, and is therefore susceptible to an action for central revocation |
Our team can assist with the strategy and paperwork for obtaining Unitary Patents and national patents. We can also advise on how to address existing or to-be-negotiated R&D and licensing agreements.
The timeline below includes the current and anticipated deadlines for the UPC.
The new UPC proceedings are structured to be fast and efficient. The goal is to conclude final oral hearings on infringement and validity issues within one year, while recognizing that complex cases may require more time. The full procedural timeline of a UPC case from filing through appeal can be downloaded below.
UPC jurisdiction covers all EU Member States that have ratified the UPC Agreement. Eighteen countries ratified before the launch date, and it is expected that other countries will do so in the future. This map will continue to be updated as more countries ratify.
